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Attorney fees in Taltech v. Esquel

By Lawrence B. Ebert, Esq.

A finding of inequitable conduct leads to attorney fees:

Following a bench trial, the district court concluded that Taltech inventor John
Wong engaged in inequitable conduct during prosecution of the ?779 patent before the
United States Patent and Trademark Office (?PTO?) when he did not disclose a raincoat
seam that included heat-fusible adhesive tape (undisclosed raincoat seam, ?URS?), and
when he misrepresented a raincoat seam previously made and sold by TAL (?double
top-stitch seam?). Based on these inequitable conduct findings, and a finding of
litigation misconduct, the court declared the case exceptional under 35 U.S.C. § 285.
The July 13, 2007, final judgment awarded Esquel attorney fees and costs based on the
exceptional case finding. TAL appealed.

(...)

District courts may award reasonable attorney fees to a prevailing party ?in
exceptional cases.? 35 U.S.C. § 285. ??[T]he types of conduct which can form a basis
for finding a case exceptional [include] . . . inequitable conduct before the P.T.O., [and]
misconduct during litigation.?? Hoffman-LaRoche, Inc. v. Invamed, Inc., 213 F.3d 1359,
1365 (Fed. Cir. 2000) (quoting Beckman Instruments, Inc. v. LKB Produkter AB, 892
F.2d 1547, 1551 (Fed. Cir. 1989)).

Full post as published by IPBiz on May 12, 2010 (boomark / email).